Friday, May 10, 2013

I always enjoy reading Tony Fletcher's articles in the Trademark Reporter, both for his wisdom and his humor. Here he probes the genericness/descriptiveness dichotomy, concluding that, "[q]uite simply, the problem is that it is impossible to foresee with tolerable accuracy where courts, or the USPTO, will draw the line between generic names and descriptive terms." Anthony L. Fletcher, "Separating Descriptive Sheep From Generic Goats," 103 TMR 487 (2013).

[I]t is critical to understand the “generic”– “descriptive” dichotomy for trademark management and planning purposes. Promoting a name that can never become a trademark as if that name were a trademark is an exercise in futility. While promoting a generic name as a trademark might result in a degree of trademark recognition by the public, when that begins to happen, competitors can step in and, with impunity, appropriate to themselves and/or their products whatever degree of de facto trademark meaning might have been created.